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1101 Request for Statutory Invention Registration (SIR) [R-2] - 1100 Statutory Invention Registration (SIR) and Pre-Grant Publication (PG Pub)

1101 Request for Statutory Invention Registration (SIR) [R-2]

35 U.S.C. 157 Statutory invention registration.

(a) Notwithstanding any other provision of this title, the Director is authorized to publish a statutory invention registration containing the specification and drawings of a regularly filed application for a patent without examination if the applicant -

(1) meets the requirements of section 112 of this title;

(2) has complied with the requirements for printing, as set forth in regulations of the Director;

(3) waives the right to receive a patent on the invention within such period as may be prescribed by the Director; and

(4) pays application, publication, and other processing fees established by the Director. If an interference is declared with respect to such an application, a statutory invention registration may not be published unless the issue of priority of invention is finally determined in favor of the applicant.

(b) The waiver under subsection (a)(3) of this section by an applicant shall take effect upon publication of the statutory invention registration.

(c) A statutory invention registration published pursuant to this section shall have all of the attributes specified for patents in this title except those specified in section 183 and sections 271 through 289 of this title. A statutory invention registration shall not have any of the attributes specified for patents in any other provision of law other than this title. A statutory invention registration published pursuant to this section shall give appropriate notice to the public, pursuant to regulations which the Director shall issue, of the preceding provisions of this subsection. The invention with respect to which a statutory invention certificate is published is not a patented invention for purposes of section 292 of this title.

(d) The Director shall report to the Congress annually on the use of statutory invention registrations. Such report shall include an assessment of the degree to which agencies of the federal government are making use of the statutory invention registration system, the degree to which it aids the management of federally developed technology, and an assessment of the cost savings to the Federal Government of the uses of such procedures.

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37 CFR 1.293 Statutory invention registration.

(a) An applicant for an original patent may request, at any time during the pendency of applicant's pending complete application, that the specification and drawings be published as a statutory invention registration. Any such request must be signed by (1) the applicant and any assignee of record or (2) an attorney or agent of record in the application.

(b) Any request for publication of a statutory invention registration must include the following parts:

(1) A waiver of the applicant's right to receive a patent on the invention claimed effective upon the date of publication of the statutory invention registration;

(2) The required fee for filing a request for publication of a statutory invention registration as provided for in § 1.17(n) or (o);

(3) A statement that, in the opinion of the requester, the application to which the request is directed meets the requirements of 35 U.S.C. 112; and

(4) A statement that, in the opinion of the requester, the application to which the request is directed complies with the formal requirements of this part for printing as a patent.

(c) A waiver filed with a request for a statutory invention registration will be effective, upon publication of the statutory invention registration, to waive the inventor's right to receive a patent on the invention claimed in the statutory invention registration, in any application for an original patent which is pending on, or filed after, the date of publication of the statutory invention registration. A waiver filed with a request for a statutory invention  registration will not affect the rights of any other inventor even if the subject matter of the statutory invention registration and an application of another inventor are commonly owned. A waiver filed with a request for a statutory invention registration will not affect any rights in a patent to the inventor which issued prior to the date of publication of the statutory invention registration unless a reissue application is filed seeking to enlarge the scope of the claims of the patent. See also § 1.104(c)(5).

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A request for a statutory invention registration (SIR) may be filed at the time of filing a nonprovisional application for patent, or may be filed later during pendency of a nonprovisional application. The fee required ( 37 CFR 1.17(n) or (o)) depends on when the request is filed. The application to be published as a SIR must be complete as set forth in 37 CFR 1.51(b) including a specification with a claim or claims, an oath or declaration, and drawings when necessary. Applicants should use the format set forth in form PTO/SB/94, Request for Statutory Invention Registration. Form PTO/SB/94 is available from the USPTO website (www.uspto.gov), and it is reproduced **>at the end of< this section.

A provisional application cannot include a request for a SIR.

Requests for statutory invention registrations, including those submitted in utility, plant, and design applications, are handled in art units 3641 and 3662 of Technology Center (TC) 3600. Accord­ingly, incoming new applications which include a request for a SIR will be processed like other new applications in the Office of Initial Patent Examination (OIPE) and then forwarded to TC 3600. TC 3600 may be assisted by other Technology Centers when the subject matter of the application makes it necessary or desirable. For example, TC 1600 may handle issues under 35 U.S.C. 112 in applications involving biotechnology.

Applications not already assigned to art unit 3641 or 3662 which receive a request for a SIR (or any other indication that they are to be published as a SIR) should be forwarded with a brief explanation to one of these art units via the technical support staff of the TC to which the application is assigned. The forwarding TC should first determine whether an Office action has been mailed in the application and issue proper SIR disposal credit to the examiner who prepared any such action where appropriate. Art unit 3662 handles applications including a request for a SIR that are electrical in nature and those that are related to computer science. Accordingly, applications from TCs 2100, 2600, and 2800 should be forwarded to art unit 3662. All other applications including a request for a SIR should be forwarded to art unit 3641. An examiner in art unit 3641 or 3662 will determine whether the request for a SIR is proper. An examiner who is not in one of these two art units should make no comment to the applicant regarding what effect the filing of a request for a SIR may have had on any outstanding rejection.

It should be noted that 37 CFR 1.211 requires the publication of most nonprovisional applications (other than for a design patent filed under 35 U.S.C. 171 and reissue applications filed under 35 U.S.C. 251) filed on or after November 29, 2000. Exceptions to publication are set forth in 35 U.S.C. 122(b)(2) and 37 CFR 1.211. Further, voluntary publication may be requested under 37 CFR 1.221(a) for applications filed before, but pending on, November 29, 2000. An applicant may find publication of an application to be a desirable alternative to requesting a SIR since publication of the application is achieved without any waiver of patent rights. >See MPEP § 1120 et seq. for more information pertaining to eighteen monts publication of patent applications.<

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